Ill-Advised Attempt to Blow Up the DMCA Online Safe Harbors Unsurprisingly Fails–Athos v. YouTube

Athos owns the copyrights to many classic Mexican films. Users regularly upload its film clips to YouTube. These uploads have irritated Athos since 2014. However, Athos rejected YouTube’s fast-lane options for copyright owners (such as the Copyright Match Tool, Content Verification Program, and Content ID), allegedly because it did not want to agree to release YouTube from liability. Instead, it chose the standard DMCA takedown notification route, which functioned as intended. YouTube expeditiously responded to all DMCA takedown notices, and “Youtube has terminated 1,240 accounts against whose videos Plaintiff submitted takedown requests.” However, after years of tediously submitting standard DMCA takedown notices (allegedly over 3,300 repeated takedown notices in 3 years) and still seeing clips uploaded, Athos had enough and exercised the option it had retained to sue YouTube. Its complaint covers about 7,000 clips from 570 films. YouTube invoked its DMCA safe harbor.

The court outlines the plaintiff’s legal theory:

because YouTube has automated software that scans videos to help users identify potentially infringing clips, Plaintiff’s DMCA notices imputed on YouTube knowledge of each and every single clip that infringed on a noticed film. Accordingly, Plaintiff argues that by limiting itself to removing only the clip specifically identified by URL in the DMCA notice, as opposed to every other clip that infringed on the relevant movie, YouTube breached its DMCA removal duties

The court’s TL;DR: these arguments were rejected by the Viacom and Veoh cases over a decade ago.

Scienter. The plaintiff argued that every time it submitted a DMCA takedown notice, the notice also created scienter about all other infringing clips. The court fillets this very old-school theory:

• “courts have repeatedly rejected the theory that an ISP can be attributed with specific knowledge over non-noticed infringing items by virtue of the ISP’s video surveillance capabilities.”
• “requiring ISPs to use their technologies to identify infringing items out of their own initiative would be a violation of the DMCA’s non-monitoring and copyright policing principles.”
• “in Viacom the Second Circuit rejected identical arguments to the ones asserted here by Athos…In UMG Recordings, that Circuit disposed of near-identical claims of actual and constructive knowledge to those raised by Athos here.”
• “We find this line of cases to be on point, as well as highly persuasive, and cannot discern a principled basis on this record to depart from their holdings.”
• Also, the court later says that “while YouTube systems may be well equipped to detect video matches, the software does not necessarily have the capacity to detect copyright infringements.”

The court summarizes: “evidence of the technologies that ISPs independently employ to enhance copyright enforcement within their system cannot form the basis for ascribing disqualifying knowledge of unreported infringing items to the ISP. Such a conception of knowledge would contradict the plain mandate of § 512(m).”

The plaintiff tried to get around this by saying that, in its DMCA notice, it generically asked YouTube to remove other (unidentified) infringing clips. The court rightfully recognizes that this is just repackaging the same argument: “asking YouTube to go beyond the specific DMCA notices and effect removals on its own “initiative,” whether by means of “readily available” data or otherwise, amounts to requiring the ISP to take on an affirmative duty to investigate infringement….Plaintiff runs headlong against a brick wall erected by the DMCA that plainly does not require YouTube to do so.”

The court summarizes:

Irrespective of how Athos phrases its request, charging YouTube with the affirmative obligation of going beyond the specific URLs identified in Plaintiff’s  DMCA takedown requests would in effect shift from the copyright owner to the ISP the burdens of policing and identifying infringement on its systems. This burden shift would contravene Congress’ calculated choices and the DMCA’s enacted text…

while Plaintiff would like for this court to substitute the existing DMCA “notice and take-down” regime for an amorphous “notice and stay-down” mandate, we cannot do this just because it makes sense from a copyright holder’s perspective

Financial Benefit/Right and Ability to Control. The plaintiff tried the very old-school argument that 512(c) excluded vicarious copyright infringement (because the prima facie elements use the same words as the defense elements). “This view, however, has been expressly rejected by both the Second and Ninth Circuits as inconsistent with the text and purpose of o [sic] the DMCA.”

The Second Circuit Viacom case unhelpfully said that the right and ability to control depends on the service’s attempts to “exert substantial influence” over users. The court says YouTube didn’t do that. First, YouTube can freely restrict access to its “video detection software.” Further:

Athos’ argument that YouTube’s management of advertising, monetization, and algorithmic video curation can be construed as control is unfounded. Indeed, these claims have all been repeatedly rejected by applicable case law

BUT. THE. ALGORITHMS….

The financial benefit argument goes no better:

Plaintiff cites no evidence that YouTube encourages infringement on its website, or that YouTube promotes advertising by relying on infringing material. To the contrary, YouTube’s uncontested evidence establishes that of the total clips-in-suit, 91% generated no advertisement revenue on YouTube, that YouTube employs mechanisms designed to avoid showing ads in connection with content that has been claimed by a copyright owner, and that if any ad appeared before or after a clip-in-issue, that ad was merely coincidental

I wonder if YouTube will get a 505 fee shift. Given how clearly the plaintiff’s arguments were preempted by precedent, a 505 fee shift seems appropriate to me.

* * *

This case indirectly raises an interesting practical dilemma for copyright owners. Is it better to send takedown notices the old-fashioned way or to participate in a service’s owner-optimized tools, but at the cost of waiving future claims? (Of course copyright owners prefer the “magic wand” third option, but this case reiterates that the third option doesn’t exist). The opinion indicates that, with the help (and maybe the recommendation) of the law firm Gibney Anthony & Flaherty, Athos chose the former.

I bet if I posed this dilemma to law students, they would predominantly favor the old-fashioned way rather than giving up the valuable right to sue; while I bet if I asked experienced in-house counsel, they will nearly uniformly select the fast-lane and willingly give up the right to sue. This does make me wonder about Athos’ choice to double-down on the old-fashioned takedown notices, costing lots of time and money, to preserve the lawsuit option. Wouldn’t Athos have been better to get on the fast-lane initially? And wouldn’t getting on the fast-lane later still been better than bringing a doomed lawsuit like this?

I respect when people march to their own drummers. However, they still need to listen carefully to the melody.

* * *

This lawsuit directly attacked the DMCA with no nuance. Hollywood’s most expensive lawyers have tried such frontal assaults multiple times with no real successes. So it certainly would have been surprising if better results could be obtained by the attorneys at Dorta & Ortega of Coral Gables, Florida, who tout their expertise in practice areas such as criminal defense, personal injury, workers comp, and wage and hour litigation. Sometimes a fresh perspective brings new insights to well-settled law. Other times, folks get so far outside their swimlanes that they drown. I’ll let you decide which analogy fits better here.

Case citation: Athos Overseas Ltd v. YouTube Inc., No. 21-21698 (S.D. Fla. May 16, 2023). The complaint.